Caterpillar Inc v John Deere Ltd [1999] FCA 723

FEDERAL COURT OF AUSTRALIA

Caterpillar Inc v John Deere Ltd [1999] FCA 723

CATERPILLAR INC V JOHN DEERE LTD

VG 739 OF 1997

HEEREY J

20 MAY 1999

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 739 OF 1997

BETWEEN: CATERPILLAR INC

Applicant

AND: JOHN DEERE LTD (ACN 008 671 725) AND OTHERS

Respondent

JUDGE: HEEREY J

DATE: 20 MAY 1999

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 Some issues have arisen as to discovery sought from the applicant Caterpillar Inc. Six categories have been the subject of discussion between the parties. The only remaining categories in dispute are: "3. All documents relating to the state of common general knowledge in Australia as at 20 December 1983 in relation to the invention described and claimed in the patent. 4. All documents relating to the state of the prior art in Australia as at 20 December 1983 in relation to the invention described and claimed in the patent." 2 Before dealing with these categories I would make the general observation that an order for discovery is a discretionary one. As Practice Note 14 indicates, courts now - and in particular this court - are giving much closer scrutiny to discovery, having regard to the potential that discovery has for complicating the orderly progress of cases and creating unnecessary expense. 3 As to category 3, I accept what was put by Mr Shavin QC on behalf of the applicant that there is an established line of authority to the effect that particulars or discovery will not be ordered of common general knowledge. I refer to Holliday v Heppenstall (1889) 6 RPC 320 at 326, British Thomson-Houston Co Ltd v Stonebridge Electrical Co Ltd (1916) 33 RPC 166 at 171, and Aluma Systems Inc v Hunnebeck Gmbh [1982] FSR 239. 4 The reason for this policy is particularly apparent in the present case. The discovery sought would require the applicant to examine a vast number of documents - these documents being largely if not wholly in the United States, where the alleged invention was produced - and to speculate as to whether back in 1983 the hypothetical non-inventive skilled person in Australia would or would not have known of the matters disclosed in those documents. I think the discovery sought would be quite an onerous and unreasonable burden. 5 As to category 4, the particulars required by O 58 r 15(2) have been given of the publications and machines alleged to constitute prior use. The respondent is confined to those matters and should not be permitted, in my opinion, to fish around seeing if there are any other matters that might constitute prior use. It was said that documents might "explain or elucidate" the matters relied on to constitute prior use but that does not seem to me to be a sufficient basis. I expect that there will be no lack of explanation and elucidation of these matters by expert witnesses called at the trial. 6 The respondent has to establish whether the publications relied on were in fact published in Australia prior to the priority date and whether the various machines referred to were available or in existence in Australia at the priority date. Then the respondent has to show that those matters did involve an anticipation. Discovery is not likely to be of assistance on those issues. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.